Claims for networked exercise feedback system invalid for indefiniteness

The claims of a patent for an exercise and health feedback system using networked electronic devices were invalid for indefiniteness, the U.S. Court of Appeals for the Federal Circuit has held. A decision of a Utah federal district court was affirmed. Also affirmed was a separate case in the same district court, involving the same patent, in which the district court held that infringement allegations were barred by the doctrine of issue preclusion (Icon Health & Fitness, Inc. v. Polar Electro Oy, August 8, 2016, O’Malley, K.).

Patent-in-suit. Icon Health & Fitness, Inc., owned U.S. Patent No. 6,921,351 ("the ’351 patent"). The ’351 patent disclosed an exercise and health system that was capable of providing feedback and encouragement to the user (simulating the function of a personal trainer) and networking devices together to simulate a group setting. Icon filed separate infringement actions against Polar Electro Oy and Polar Electro Inc. ("Polar") and Garmin International, Inc., and Garmin USA, Inc. ("Garmin").

The dispute hinged on key claim terms two independent claims, which generally disclosed an exercise system comprising a local system including at least one exercise apparatus and at least one associated local server, with the exercise apparatus and local server having an in-band communication using a certain wireless protocol and an out-of-band communication with a user of the exercise apparatus, wherein the out-of-band communication had a relationship to the in-band communication.

Indefiniteness. In the lawsuit between Icon and Polar, the district court found that certain claims of the ’351 patent were indefinite and, therefore, invalid. Specifically, the district court found the claim terms "in-band," "out-of-band," and "relationship" to be "ambiguous and incapable of construction," concluding that the claims containing these terms failed to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

At the Markman hearing on the parties’ proposed claim constructions, the district court asked the parties to retain experts in order to ascertain the perspective of skilled artisans. An evidentiary hearing was held. After considering the expert testimony, the district court dismissed with prejudice Icon’s claim against Polar for infringement, on the ground that the claim terms at issue were ambiguous and incapable of construction. On appeal, the Federal Circuit reviewed the district court’s legal conclusion regarding indefiniteness de novo, while reviewing any underlying factual determinations for clear error.

Icon and its expert took the position that "in-band" and "out-of-band" communications were different from one another, and the fact that there was a difference was, by itself, sufficient to render the claims definite and capable of construction. "In-band communication," the expert opined, would be readily understood as communication to or from the exercise apparatus, whereas "out-of-band communication" would be understood as using a device capable of any communication other than the in-band communication. Polar’s expert agreed that the terms were distinct but argued that the ’351 patent did not provide enough information to define those terms with reasonable certainty. The "relationship" between "in-band" and "out-of-band," according to Polar’s expert, was completely unspecified. Nothing described what constituted an in-band or out-of-band communication (other than the fact that they were different) or how they were related. Polar’s expert proffered 10 extrinsic prior art patents and textbooks in support of the contention that a reference was required to provide context and give meaning to the terms "in-band" and "out-of-band."

The district court did not err by relying on these extrinsic references in reaching its conclusion that the terms were indefinite, the Federal Circuit said. The district court’s findings on the evidence were findings of fact, reviewed for clear error, and no such clear error existed. Nor did the appellate court find error in the legal conclusion drawn by the district court. In the Federal Circuit’s view, the district court correctly determined that the ambiguous nature of the distinction between the two terms rendered them incapable of construction. Accordingly, dismissal of the infringement claims against Polar was affirmed.

Issue preclusion. The Federal Circuit also affirmed the district court’s ruling that Icon’s assertion of the ’351 patent against Garmin was barred by the doctrine of issue preclusion, based on its determination in the Polar case that the patent was invalid for indefiniteness.

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